Foreign Patents for Small Business – How Do We Get Them?
In a number of places on this website we will be talking about why
a small business may want to seriously consider obtaining foreign patent protection in
other countries. But for now let’s just talk about how you do that.
Well -the answer is not simple. But we will try to give you a
simple version for starters.
When you file a U.S. patent, a clock starts ticking. In 12 months
you have to do something in order to file foreign. You should in fact make your
decision by about month 10 so you have time to do it right.
Foreign Patents for Small Business - Why 12 Months?
Let's first talk about why you have 12 months. In 1883 an
intellectual property treaty called the Paris Convention was ratified by many
of the world's industrialized nations. The Paris Convention allows an inventor
in any member country to file a patent in their home country and then be able
to file in other member countries 12 months later. The foreign filings will be
assigned a priority date corresponding to the date of their home filing. This
means that any information that becomes public after that priority date can not
be used against those foreign filings. Or in legal patent parlance that public
information cannot be part of the prior art for that patent.
The Paris Convention was a good step forward for large and small businesses. Most
of them are reluctant to go to the big expense of filing both home country
and foreign patents early in the patenting process. They don't yet even know if
that have a valid patentable idea. Furthermore they don't know if there is a
market for their idea. It is like playing poker and having to make all your
bets before seeing all of your cards. And filing foreign patents can be an
expensive proposition when compared to only filing locally. More on that later. The Paris Convention gave small businesses a chance to see a few more cards before placing their big bet.
But only a few more cards. As the time needed to get a validity opinion
from your friendly national patent office grew year by year, and the time
required to commercialize ideas increased the 12 month reprieve was not that
big of a benefit in most cases.
Hence the Patent Cooperation Treaty (PCT)
In 1977 the Patent Cooperation Treaty was signed by many countries. The PCT process
basically allows you to put a fairly modest (usually less than $3000) filing fee ante into the poker game
to buy time to see more cards before your big bet. Twelve months after filing
your home country patent (either a provisional or provisional) you can now elect to not file foreign patents immediately but
instead to file a PCT application to the World Intellectual Property
Organization (WIPO). After filing a PCT application (which never becomes a
patent - it is only a placeholder) the inventor now can delay the foreign
filing decisions an additional 18 months.
Thus foreign patent filings can occur 30 months after the original
home country filing. But all of the foreign filings will have the priority date
of the original filing. Again the inventor is protected as to prior art dates,
and the protection is all the way back to the filing date in the home country.
And in the U.S. (as in other PCT countries) your home patent office acts as a receiving office for filing your PCT application. So you can file your PCT into your home countries receiving office and they pass it on to the WIPO office.
We make the point on other parts of this website that there a few things in intellectual property that small businesses can do themselves but many in which you should use skilled help. The filing of a PCT application internationally via the Patent Cooperation Treaty and the later nationalization of that PCT into your chosen PCT member countries should be done using skilled legal help.